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Mon, 06 Mar 2017 18:13:06 +0000en-UShourly1https://wordpress.org/?v=4.7.7Lesson to the Wise: Know Your Experthttps://www.cleanandgreenlaw.com/2017/03/06/lesson-to-the-wise-know-your-expert/
https://www.cleanandgreenlaw.com/2017/03/06/lesson-to-the-wise-know-your-expert/#respondMon, 06 Mar 2017 18:13:06 +0000http://www.cleanandgreenlaw.com/?p=788Continue Reading]]>In a recent Court of Claims decision, attorneys for the United States Department of Justice (DOJ) learned a hard lesson regarding the importance of vetting experts prior to proffering them. In Alta Wind I Owner-Lessor C, and Alta Wind I Owner-Lessor D, et al v. United States, 128 Fed. Cl. 702 (Ct. Claims Oct. 31, 2016), a dispute existed where the owners of six (6) wind-power facilities in the Alta Wind Energy Center near Los Angeles, California alleged that the Federal government underpaid them by over $206 million dollars when it made certain grant payments to the owners pursuant to Section 1603 of the American Recovery and Reinvestment Act of 2009 (ARRA). Section 1603 of the ARRA allows for certain renewable energy facility owners the ability to apply for, and to receive, cash grants equal to thirty percent of the “basis of such property.”

Plaintiffs and the Federal government disagreed over how to calculate the “basis” of the wind farm facilities at issue. Plaintiffs argued that “basis” meant the purchase price of the facilities, minus ineligible property, such as land and energy transmission lines. The Federal government asserted that basis “should be calculated from the value of each wind farm’s grant-eligible constituent parts and their respective development and construction costs,” arguing that numerous factors made the purchase prices an unfair measure of each wind farm’s value. The dispute led to litigation initiated in the Court of Claims, given its subject matter, which resulted in a nine-day trial. The government offered a single expert to support its position on “basis,” Dr. John Parsons, a Senior Lecturer at the Massachusetts Institute of Technology (MIT) Sloan School of Management, whom it noted as an expert in the areas of economics, finance and valuation, with an extensive background in consulting work and teaching.

During voir dire examination, Plaintiffs’ counsel questioned Dr. Parsons about his Curriculum Vitae (CV), which listed forty-seven articles and publications that he authored or co-authored from 1985 to the present. Rule 26(a)(2)(B)(iv) of the Court of Federal Claims requires expert witnesses to list all publications authored in the previous ten years. Dr. Parsons testified that he had provided a complete listing of his articles and publications—not only for the last ten years, but also from 1985 to the present. Plaintiffs’ counsel also questioned Dr. Parsons about an expert report used in another case in 1997, which included a similar list of his articles and publications from 1985-1995. Dr. Parsons again confirmed this was a complete list of his writings. Unfortunately for the government, Dr. Parsons’ affirmations were not true. Plaintiffs’ counsel pointed out that Dr. Parsons was attempting to conceal articles he had written for Marxist and East German publications from 1986-1989. Dr. Parsons had even served as an Editorial Board member of the “Science & Society” publication, which is a self-described “Journal of Marxist Thought and Analysis.”

Based on Dr. Parsons’ omissions, and twice having falsely testified about the completeness of his expert witness disclosures, the Court found that Dr. Parsons had intentionally provided untruthful testimony under oath, and held it had “no choice but to exclude Dr. Parsons’ testimony.” The Court noted it “simply could not rely on the substantive expert testimony of a witness who was untruthful in describing his background and qualifications.” And as further noted by the Court, this “outcome was especially dispositive here because Dr. Parsons’ untruthfulness related to his writing on economic topics, which was the area in which he was called to testify as an expert.”

The exclusion of Dr. Parsons’ testimony was devastating to the government’s case. Government attorneys had not identified any other experts on its pretrial list of witnesses, and therefore, could not rebut the testimony of Plaintiffs’ experts, and likewise had no expert testimony to support its counterclaims. Given the lopsided evidentiary presentation, the Court found in Plaintiffs’ favor, adopted Plaintiffs’ position that “basis” was essentially equal to the purchase price of the facilities, and awarded the Plaintiffs damages between the difference of Plaintiffs’ calculation and what had been paid to date.

From a practical standpoint, this outcome could have been entirely avoided had the DOJ attorneys properly vetted their own witness and completed their “due diligence,” like Plaintiffs’ counsel did. The completeness of Dr. Parsons’ publications lists were completely irrelevant to the substantive tax issues in the case, but having placed itself in the position where there were no other experts available, the government bungled what ended up being a nine-figure issue. By reviewing his publication list in detail, this issue could have been completely avoided by the use of another qualified and knowledgeable expert. And even if Dr. Parsons were the only available witness to testify as to this issue, Dr. Parsons’ acknowledgment of being involved in Marxist publications two decades ago would have only affected the weight of his testimony and/or his credibility; it would not have been determinative. His decision to lie about having made those writings left the government in a no-win situation in the middle of a case.

The bottom line: even lies by omission regarding non-substantive issues can torpedo a solid case. Thoroughly investigate the experts you need to support your claims, and make sure their disclosures are complete and accurate. And where nine figure dollar amounts are at stake, it wouldn’t hurt to have a second expert lined up either and disclosed.

While the likelihood of a mass post-election American migration to Canada seems less likely, trying to move to the northernmost regions of Canada can be difficult. Canada may be a land of friendly locals and breathtaking scenery, but much of Canada’s Arctic territory is not served by paved roads. The only transportation in these areas may be by ice road, plane, or boat. This poses a major logistics problem that many innovators are trying to solve. One such solution may take a page from the history books. Airships are being touted as a potential solution to transport goods in regions without regional airports, and not just in Canada. For example, the “flying bum” airship is being tested in England. What once was a stylish and popular mode of transport is potentially making a comeback.
Revisions or improvements to old technology are important in the world of cleantech, and not just with airships. Lithium-ion batteries continue to develop from those in the 1970’s. Solar cells advanced from the junction semiconductor solar cell patented in 1946. The U.S. Patent and Trademark Office grants thousands of patents every month that improve existing technology. However, remember that there also are thousands of rejections issued every month on patent applications that are considered obvious. Under U.S. patent practice, a patent cannot be granted if differences between the claimed invention and previous technology are such that the claimed invention as a whole would have been obvious to a person of ordinary skill in the art.

There are multiple reasons that a patent examiner may reject a patent application for obviousness. Turning back to airships, an examiner could determine that an improved airship design is obvious because the inventor applied a known technique to a known airship design which yielded (in the examiner’s mind) predictable results. For example, if an inventor designs an airship with a more rigid outer skin, fire-suppression systems, or improved means for evacuation, an examiner may point to known avionics technology and determine that airships were ready for such improvements after the Hindenburg disaster. The burden then shifts to the inventor to argue why his or her improved airship design is not obvious. The inventor or the inventor’s patent attorney could then argue that, for example, the examiner’s rationale for combination is faulty, that the references actually suggest against the examiner’s proposed combination, or that the combination would render a reference unsatisfactory for its intended purpose.

Not every argument against obviousness will fly. Arguments about unclaimed features or the difficulty inherent in a physical combination of the references will not carry weight. Complaining about the number of references used in the rejection, the age of the references used in the rejection, or why the combination of references in the rejection does not make business sense won’t get off the ground. Likewise, an examiner will not get on-board with arguments against individual references when the examiner combined pieces of the references together in the obviousness rejection.

Before needing to make any arguments against obviousness, you can prepare your patent application to counter the examiner’s inclinations. Tell a good story in the text of your patent application that explains why your improvement was not easy to complete or why others thought it would fail. Throw in data that compares your invention to previous techniques, showing how much of an improvement your invention offers. Describe the deficiencies of the previous system that might lead one away from improving it. Or, if the situation merits it, carefully claim and describe your improvement to make it seem like your invention is a narrow and optimized result of your research.

Fighting with examiners over obviousness is very common. Technology advances based on improvements to older designs are especially prone to an obviousness rejection. Preparing for potential obviousness concerns can prevent disappointments at the Patent Office and can help keep your dreams of a patent airborne.

]]>https://www.cleanandgreenlaw.com/2017/01/03/keeping-your-application-aloft-fighting-obviousness-rejections-at-the-patent-office/feed/0New York State Continues its Push to Reform State Utility Marketshttps://www.cleanandgreenlaw.com/2016/05/25/780/
https://www.cleanandgreenlaw.com/2016/05/25/780/#respondWed, 25 May 2016 13:09:57 +0000http://www.cleanandgreenlaw.com/?p=780Continue Reading]]>

On May 19, 2016, the New York State Public Service Commission (the “PSC”) released Filing No. 749 entitled “Order Adopting a Ratemaking and Utility Revenue Model Policy Framework,” [Link] which was made in furtherance of the State’s focus on utility operations increasing their renewable sources of energy in the State. The main element of the restructuring centers on the establishment of financial mechanisms through retail markets for Distributed Energy Resources (“DERs”), which will provide consumers a more integrated way of overseeing their energy use, and consequently, their energy costs.

The PSC’s action is another step in implementing Governor Cuomo’s Reforming the Energy Vision (“REV”) initiative. [Link] The REV is one of the most ambitious State plans in the country targeted at clean energy, and calls for, amongst other things, New York’s energy generation to be at least 50% renewable by 2030, a 40% reduction in greenhouse gas emission from 1990 levels, and a 23% reduction in energy consumption in buildings. A series of programs have been instituted across New York to assist in meeting REV goals, including the NY-SUN program (financing solar projects across the State), BuildSmart NY (requiring a 20% reduction in energy use in State buildings by 2020), and the NY Green Bank (public-private financing for clean energy programs).

Under the terms of the PSC’s order, by no later than December 1, 2016 each of the major State utilities will be required to file a system efficiency proposal focused on reducing high-cost energy generation during peak demand times. Certain other financial benefits are to be offered to utilities for meeting these regulatory changes, as outlined by the PSC’s, and consistent with the REV.

This filing will be considered in conjunction with the already established filing deadline of June 30, 2016 for State utilities to submit Distributed System Implementation Plans (“DSIPs”) focused on DER coordination in the utility markets, and necessary planning activities to ensure proper integration of the same. A supplemental DISP submission is to be developed jointly by the utilities after the June 30 submission, and filed by September 1, 2016.

As a frame of reference, the REV initiative was separated into two specific tracks – Track 1 concentrates on the development of DER markets and utilities as an integrated Distribution System Platform (“DSP”); Track 2 concentrates on reforms to ratemaking and revenue streams for DSP providers to foster and develop the DSP provider network. PSC’s ultimate goal is that, upon completion of the 2 step process, a stronger and more diverse utility market will exist that is focused more on consumer-based considerations and benefits, and less on utility markets operating in the context of large existing energy production platforms.

Track 2 is expected to be of the most interest to followers of the State energy market, as the intent is to align the financial interests of both the utilities and other interested third parties under a decoupled revenue scheme. Although the intention of Track 2 makes a lot of sense, it may be problematic from an implementation perspective. Such an alignment of interests will necessarily require a great deal of massaging in order to develop standards and incentives that can efficiently do so, and it’s still an open question as to how effective the process will be in that regard. In furtherance of this process, the PSC has proposed a series of financial reforms to address utility business models in the State via the use of Market Based Earnings (“MBEs”), further ratemaking reforms (including through the use of targeted incentives), and rate design reforms.

Stay tuned for further blog posts discussing the PSC’s actions as this process moves forward.

]]>https://www.cleanandgreenlaw.com/2016/05/25/780/feed/0New York Public Service Commission Issues New Consumer Protection Guidelines for Energy Service Companieshttps://www.cleanandgreenlaw.com/2016/03/23/new-york-public-service-commission-issues-new-consumer-protection-guidelines-for-energy-service-companies/
https://www.cleanandgreenlaw.com/2016/03/23/new-york-public-service-commission-issues-new-consumer-protection-guidelines-for-energy-service-companies/#respondWed, 23 Mar 2016 15:31:08 +0000http://www.cleanandgreenlaw.com/?p=777Continue Reading]]>On February 23, 2016, the New York Public Service Commission (PSC) issued an order setting new consumer protection guidelines for energy service companies, or “ESCOs.”

An ESCO is a business supplying electricity and/or gas to a variety of industrial, residential and/or commercial consumers. These entities regularly market themselves to consumers as a cost-sa
ving alternative to purchasing energy from a utility, and offer a range of pricing options, such as long-term fixed prices and/or variable rates.

The issuance of the new regulations was prompted by a rise in consumer complaints concerning questionable ESCO marketing practices, dissatisfaction with the prices charged by ESCOs after no price savings were realized, and unauthorized enrollment of consumers into ESCO products.

Effective March 4th, ESCOs may only enroll new mass market consumers or renew existing consumers in gas or electric services if one of two conditions are met: (1) the enrollment includes a contractual guarantee that the customer will pay no more than if he/she were purchasing energy from a utility; or (2) the enrollment is based on a contract for an electricity product derived from at least 30% renewable energy sources.

ESCOs currently serving consumers via month-to-month variable rate contracts must enroll those customers in a compliant product by the end of the current billing cycle or return them to utility supply services. If an ESCO customer pays more than he would have had he purchased energy through a local utility, the ESCO is required to refund the difference at the end of the year.

For existing customers in the latter case, the ESCO must obtain affirmative consent from the consumer prior to renewing them from a fixed rate or guaranteed savings contract into a contract that provides renewable energy but does not guarantee savings. Renewable energy sources that qualify under the second exception include biomass, biogas, hydropower, solar energy, and wind energy, as well as renewable attributes.

The order also set forth certain issues that the PSC promised to further study within 60 days, including:

Examining under what conditions ESCOs may enroll mass market consumers on a going forward basis, to determine whether the conditions above should be imposed against ESCOs on a long-term basis;

Whether the existing three-day period for customer rescission of ESCO contracts should be extended or modified;

Whether ESCOs should be required to post performance bonds or take other measures of demonstrated financial capability; and

What penalties should apply to ESCOs that violate the provisions of the order.

With respect to enforcement, the PSC indicated it would proceed via Order to Show Cause for ESCO eligibility revocation (or any less severe action it deemed appropriate) against any ESCO that has a single violation of the requirements prescribed by the Order.

Commenting on the new regulations, Governor Cuomo stated, “We have zero tolerance for these unscrupulous companies, whose business model is to prey on ratepayers with promises of lower energy costs only to deliver skyrocketing bills. These actions will root out these bad actors and protect New Yorkers from these unfair and dishonest tactics.”

The February 23, 2016 decision is available for download on the docket at the following site:

]]>https://www.cleanandgreenlaw.com/2016/03/23/new-york-public-service-commission-issues-new-consumer-protection-guidelines-for-energy-service-companies/feed/0Fighting Patent Application Rejections with Market Information: More Than Just “Nobody Else Sells This”https://www.cleanandgreenlaw.com/2016/02/19/fighting-patent-application-rejections-with-market-information-more-than-just-nobody-else-sells-this-2/
https://www.cleanandgreenlaw.com/2016/02/19/fighting-patent-application-rejections-with-market-information-more-than-just-nobody-else-sells-this-2/#respondFri, 19 Feb 2016 15:48:34 +0000http://www.cleanandgreenlaw.com/?p=770Continue Reading]]>An inventor lament that every patent attorney eventually hears is, “I’m the only one selling this, so how can the Examiner think my idea is obvious?” The argument makes sense from
an inventor standpoint. If an idea is so obvious, why is no one else making it? Shouldn’t first to market equate to first to invent? Unfortunately, the U.S. Patent and Trademark Office (USPTO) generally works based on written references, not based on market research. Those written references may not reflect the current state of your product’s market for a few reasons.

First, the Examiner is not bound only to references describing what is sold in the market. The Examiner can use just about any reference that pre-dates your earliest filing date. For example, another inventor may have described a similar idea but may have lacked the funding to manufacture anything. His lack of funding (or connections, business acumen, etc.) has no bearing on the fact that his idea was previously described.

Second, the USPTO searches references dating back more than a century. I’ve seen rejections using references showing mechanical devices from the late 1800’s. Products can come and go. It’s possible for some technologies that someone may have done something similar before your company (or even you) existed, even in greentech.

Third, the Examiner can look at references from other countries. Some of those foreign products might have been on store shelves, though you may never have heard of the manufacturer or store selling the product. For example, references from Europe, Japan, or even the USSR can describe something similar to your idea. That those products never reached American shores does not change that an explanation of them exists in written form.

However, you may be able to get some credit for being first to market or being the only player in your space. An Examiner will consider a declaration or affidavit demonstrating that a problem existed in your market for a long period of time without a solution, that experts were skeptical your product would work, showing praise from others in the industry, or showing evidence of commercial success of your claimed invention. These sorts of arguments are referred to as “secondary considerations” of non-obviousness. Keep in mind that secondary considerations can only help with an obviousness rejection. If the Examiner presents a reference that shows your claimed invention in its entirety (i.e., an anticipation rejection), secondary considerations will not help.

Secondary considerations need to be reasonably commensurate in scope with the claims. If you show a long-felt need or praise for an unclaimed feature or a feature only found in a dependent claim, then the declaration will not help with the rejection of the independ
ent claim. Also, a nexus must exist between the secondary considerations and the claimed invention, especially with commercial success. For example, the commercial success must correspond to the product that is claimed. Commercial success caused by unclaimed features or marketing unrelated to the claimed features can weaken your arguments.

Examiners at the USPTO do not search the marketplace to see if your product has competitors or whether you were first to market. Examiners are more concerned whether your idea looks similar to references from decades (or even centuries) ago. That’s not to say being first to market or the market leader does not count for anything with the USPTO. It’s just that the Examiner will not know all the facts about your market or the history of your product’s development. An affidavit or declaration can be used to provide facts to help show that creating your idea was not as simple as A plus B. A previously unsolvable problem, skepticism, praise, or commercial success can all demonstrate that your invention is not as obvious as the Examiner alleges. So you need to argue more than that your product doesn’t exist on the market today. Try to establish that your product hasn’t existed in any market and point to all the aimless effort, failed attempts, and heaps of uncertainty related to solving your problem.

]]>https://www.cleanandgreenlaw.com/2016/02/19/fighting-patent-application-rejections-with-market-information-more-than-just-nobody-else-sells-this-2/feed/0Do the Evolution: Five Ways to Adapt Your Patent Strategyhttps://www.cleanandgreenlaw.com/2015/12/14/five-ways-to-adapt-your-patent-strategy/
https://www.cleanandgreenlaw.com/2015/12/14/five-ways-to-adapt-your-patent-strategy/#respondMon, 14 Dec 2015 15:09:05 +0000http://www.cleanandgreenlaw.com/?p=764Continue Reading]]>The eastern coyote (or coywolf) is spreading across eastern North America. A study showed that coyote DNA dominates, but average eastern coyote DNA is about 10 percent dog (like Doberman Pinscher or German Shepherd) and 8-25 percent wolf. This interbreeding of coyotes, wolves, and dogs has resulted in an animal that is larger and faster than a coyote. It also has caused the resulting subspecies to overcome some weaknesses. For example, coyotes dislike hunting in forests, whereas an eastern coyote will hunt in open terrain (like a coyote) or wooded terrain (like a wolf). Wolves dislike humans and noise whereas an eastern coyote is more tolerant of people (like a dog). Eastern coyotes also have urbanized their diet and even have been observed looking both ways before crossing the street.

Adapting to changing situations isn’t just limited to animals. It’s something to consider for a patent strategy, too. Patent strategies shouldn’t be fixed. As you learn of deficiencies in your strategy or breaking news in your market, consider adapting your patent strategy. Cleantech and other technology changes rapidly. What made sense a year ago at an IP strategy meeting might be obsolete or wrong today.

Don’t be afraid to amend claim language or to adjust your planned patent application filings to protect new changes to your product. The set of claims you planned or originally filed may cover a product or method that is outdated, received poor customer feedback, or later failed experimental testing. Consider revising claims that don’t cover your product, likely won’t be used by competitors, and won’t garner interest from a potential licensee.

Don’t hesitate to put up roadblocks for a competitor or potential competitor based on new information. One benefit of a pending patent application is that it can cause anxiety at your competitor and may force them to change business strategy even before a patent issues. Connect new competitive intelligence to patent strategy. If you can think of a technique that a competitor will probably need in the future, then cover it with a patent application if it looks more valuable than other ideas that are being considered.

Cull the herd if money is tight. Prioritize patent application filings, responses, or maintenance/annuity fee payments when budget issues arise. Patent protection can be incredibly valuable, but money allocated for IP should be balanced against R&D costs (or even the electric bill). If patent portfolio expenses must be reduced, consider dropping cases that are facing stiff rejections or are unlikely to be enforced. Money keeping a case alive if that case has doubtful validity or a questionable chance of being allowed might be better spent on something else.

Adjust your foreign filing strategy based on changes in the market, within your industry, or by your competitors. Patent portfolio costs increase at an amazing rate as you expand coverage into more countries. Don’t be afraid to drop coverage if sales in certain countries fail to meet expectations or competitors or customers move operations or exit the market. Money you save by cutting (or foregoing) foreign patent coverage can be put toward new patent applications or can be sunk back into R&D.

Change your patent strategy to reflect your business environment or recent events, or to overcome deficiencies. A flexible patent strategy can help your patent portfolio thrive in new environments or against competitors. Creatures both great and small can adapt and avoid extinction through evolution, and patent portfolios are no different. Don’t let your patent portfolio be left behind.

]]>https://www.cleanandgreenlaw.com/2015/12/14/five-ways-to-adapt-your-patent-strategy/feed/0An Inventor Walks Into a Bar: Risks of Filing a “Bar Napkin” Provisional Patent Applicationhttps://www.cleanandgreenlaw.com/2015/10/06/provisional-patent-application/
https://www.cleanandgreenlaw.com/2015/10/06/provisional-patent-application/#respondTue, 06 Oct 2015 13:52:44 +0000http://www.cleanandgreenlaw.com/?p=757Continue Reading]]>Inventors come up with ideas at the strangest moments. For example, an inventor in 1937 wrote down concepts for what is considered one of the first modern computers on the back of a cocktail napkin. After a bourbon, he came up with an electronically operated machine that used binary numbers, condensers for memory, a regenerative process to prevent memory loss, and direct logical action for computation. Hard to believe the fundamentals of the device used to type up this blog post (not to mention countless greentech inventions) were originally scribbled on a little paper square.

Provisional patent applications can help an inventor with only a proverbial bar napkin describing his or her invention. It serves as a way to establish an early filing date, mark your product as patent pending, and give the inventor twelve months to test feasibility or gauge interest. The provisional patent application needs to comply with U.S. Patent and Trademark Office requirements for providing a written description of the invention. However, a particular format is not required and no formal patent claim is needed.

Can your (proverbial or actual) bar napkin be filed as a provisional patent application? Yes. I’ve seen provisional patent applications that consisted of a single annotated drawing, a slide deck without any additional explanation of the abbreviated bullet points, or an email. But should such a short document (i.e., a bar napkin) be filed as a provisional patent application? Maybe not. Here’s why.

Fewer pages in a provisional patent application can mean fewer details. A provisional patent application only provides a priority date for what it teaches or discloses. If it only has a bar napkin’s worth of scribbles, then details potentially won’t be there when needed in the future. There may be no easy way to later claim additional features under the earlier filing date. And, chances are, very little thought has been given to competing or existing technology. Without careful consideration of how the invention is differentiated, an inventor loses the chance to start crafting claims to avoid competing or existing technology.

Speed can be your greatest ally when filing patent applications because you can potentially beat a competitor. However, like doing shots too quickly, it also can be your worst enemy. A hastily-prepared provisional patent application may contain language that negatively impacts an inventor’s ability to make clarifying amendments during prosecution. For example, if your provisional patent application says things like “never,” “always,” “required,” or “necessary,” those statements may be difficult to change later without losing the earlier filing date.

Fuzzy language, important features that lack much explanation, or unknown variables in a formula can cause giant, hangover-like headaches later. A short provisional patent application may not be “enabling” or described in enough detail that someone skilled in the art can practice the invention. So the provisional patent application may not provide an early filing date for anything.

A bar napkin might only be used for a single drink. Likewise, a short provisional patent application may only cover a single design. An inventor may not be able to later draft claims covering the improved design while keeping the earlier filing date if that design changes. The inventor will be stuck with what’s in the provisional patent application.

Like the effect of imbibing too much “liquid confidence,” short provisional patent applications can provide a false sense of security. A quickly prepared provisional application may not cover details related to recent developments or key features. An inventor may falsely assume that it’s safe to freely share details about the invention without a non-disclosure or confidentiality agreement, but is actually risking a public disclosure that will impede the inventor’s ability to obtain future patent rights.

Certainly, a full, formal (and, consequently, more expensive) provisional patent application is not merited in every case. Some technologies may be straightforward enough that a single diagram and a short explanation may be sufficient to lock in an early filing date and fully describe the idea. And an inventor who has experience with patent applications may be able to handle some of the drafting, which can save on patent attorney costs. However, the dangers of filing a proverbial (or literal) bar napkin as a provisional patent application are real. Potential licensees, investors, or partners may be vastly underwhelmed by the inventor’s intellectual property if they discover it only consists of a page or two of jumbled notes. An inventor may find that there isn’t enough detail to get around an examiner’s rejections under the earlier filing date. And, even worse, an examiner may not even give credit to the earlier filing date when claims are examined. So while the groundbreaking invention scribbled on a bar napkin story is a popular example of the American dream, consider using something with more structure and detail when filing a provisional patent application. Use the bar napkin to collect condensation or phone numbers instead.

]]>https://www.cleanandgreenlaw.com/2015/10/06/provisional-patent-application/feed/0Going Global: Tips on Building a Patent Portfolio Outside the United Stateshttps://www.cleanandgreenlaw.com/2015/08/27/global-patent-portfolio/
https://www.cleanandgreenlaw.com/2015/08/27/global-patent-portfolio/#respondThu, 27 Aug 2015 20:05:55 +0000http://www.cleanandgreenlaw.com/?p=752Continue Reading]]>I occasionally hear an inventor or businessperson talk about how his or her company has a “global patent” or an “international patent.” Unfortunately, there is no such thing. While some companies have filed patent applications around the world (or at least in many corners of the industrialized world), most of the time these statements refer to filing a Patent Cooperation Treaty (PCT) application.

To clarify, a PCT application is neither a patent nor is it truly global/worldwide. PCT applications are a way to file a single patent application covering your invention in contracting states. Note that the PCT application is a vehicle for gaining patents in the future. It grants no patent rights in itself. A PCT application is, for lack of a better explanation, a placeholder. Further patent applications are needed subsequent to the PCT application to secure patent rights in various parts of the world.

That’s not to say that PCT applications don’t have benefits. PCT applications can delay attorney costs and official fees. A PCT application can sit for up to thirty months without official fees in nearly all states that accept PCT applications. So rather than paying attorneys to file patent applications in multiple states at an early date, these costs can be delayed to determine an invention’s feasibility, sales, or importance in the marketplace. The PCT application also comes with a search report, which includes references that may cause your company to adjust its filing strategy or even let the PCT application go abandoned. Again, this can save money.

See below for a graphical representation. Chart 1 illustrates a filing strategy to potentially gain patent protection in nine states. The eight patent applications filed from the U.S. provisional patent application must be filed twelve months after the U.S. provisional patent application.

Chart 2 illustrates a filing strategy to again potentially gain patent coverage in those same nine states, but delay costs using a PCT application. Now only two patent applications (the PCT application and Taiwanese patent application) filed from the U.S. provisional patent application must be filed twelve months after the U.S. provisional patent application. The seven patent applications filed from the PCT application can be filed at least thirty months after the U.S. provisional patent application.

If you assume that a patent application in each of these states/regions will cost $3,000 to $12,000 (or more, as complexity and page count increase), then you can see why delaying costs or having a built-in decision point to avoid additional costs can be beneficial.

At the thirty-month mark, the PCT application typically enters “national phase.” This means that a copy of your PCT application is filed by local attorneys in the states you choose. While translations and fine-tuning to local rules are inevitable, it’s possible to make a PCT application more “generic” to all states you are seeking protection in, or at least attempt to avoid common problems in those particular states. For example, a PCT application can be drafted with multiple claim dependencies (e.g., “the device of any of claims 1-6”), which can be beneficial in Europe or Japan. These multiple claim dependencies can be removed in the United States. upon entering national phase to prevent excess claim fees, but can avoid allegations in Japan or Europe that the various claim combination are not fully supported by the original text of the patent application.

As an added benefit, the individual states where a PCT application will enter national phase do not need to be selected when the PCT application is filed. It is possible to designate all of the states as a possibility in the future, but then tweak the exact list later.

As seen in the previously mentioned range of costs, entering national phase can become very expensive depending on the total number of states or which particular states are selected. The locations of competitors, sales, manufacturers, or potential copycats usually dictates where to consider filing. The strength of the local judiciary, cost of official fees, or other documentary requirements also should be considered. For example, India requires copies of all references and official patent correspondence from every corresponding case around the globe, which can become burdensome and costly if your company’s fight with other patent office(s) becomes protracted or your company files corresponding cases in multiple other states.

Even though a PCT application enables your company to file a patent application in most of the world, that doesn’t necessarily mean filing in all 148 contracting states is a good idea. Your company’s desire for wider coverage needs to be balanced against costs and the potential value of having protection (or at least a piece of paper saying you have protection) in that state. So consider whether spending money on patent coverage for your company’s new greentech invention in North Korea, Zimbabwe, Papua New Guinea, or Mongolia is worth the cost. Furthermore, consider whether spending money on patent coverage in, for example, Brazil, China, or Australia is worth the cost when you don’t foresee much business or competition there. A PCT application can only delay costs while your company plans its global patent strategy. To potentially gain patent coverage, costs will eventually be incurred in the parts of the world your company wants to focus on. As the old saying goes, “you need to spend money to make money.”

Spend wisely.

]]>https://www.cleanandgreenlaw.com/2015/08/27/global-patent-portfolio/feed/0Using Utility Models to Protect your Intellectual Property in Taiwanhttps://www.cleanandgreenlaw.com/2015/06/09/utility-models-intellectual-property-taiwan/
https://www.cleanandgreenlaw.com/2015/06/09/utility-models-intellectual-property-taiwan/#respondTue, 09 Jun 2015 14:17:40 +0000http://www.cleanandgreenlaw.com/?p=744Continue Reading]]>A new “green” attitude is pervading Taiwan. Besides ongoing environmental efforts, Taiwan is home to multiple green technology companies. While revenue results for some Taiwanese solar cell manufacturers declined this year, Taiwanese companies like Motech are still prominent in the green technology sector. Taiwan’s continuing presence in the green technology sector can be seen in the duties imposed by the U.S. Department of Commerce in early 2015 on solar cells imported from Taiwan.

A utility model also can be filed concurrently with an invention patent application covering the same invention. Filing both a utility model and invention patent application concurrently means the utility model can be used as insurance if prosecution of the invention patent application becomes too expensive or can provide usable coverage before the invention patent application is allowed. The invention patent application and utility model application must be filed by the same party, must be filed on the same day, and the dual filing must be declared at the time of filing. For a corresponding allowed invention patent application to issue, the utility model must lapse. Thus, any utility model will be extinguished to enable the grant of the corresponding invention patent.

It’s important to also understand the potential drawbacks of Taiwanese utility models.

The first drawback is the scope of potential protection. Only shapes, structures, or assemblies can be protected by a utility model in Taiwan. Functions, methods, or compositions are ineligible.

The second drawback is patent term. A Taiwanese utility model only has a term of 10 years, which is half that of an invention patent. Patent term is sacrificed for speed.

The third drawback is eventual examination. To be asserted or enforced, a Taiwanese utility model must be examined. A technical report is obtained (with added fees if more than 10 claims are present) to assess patentability. For this technical report, novelty and obviousness are evaluated under the same standard as an invention patent application. While examination can be delayed until desired or needed, a utility model is subject to the same examination requirements as an invention patent application. Furthermore, a third party can obtain such a technical report to ascertain a utility model’s patentability.

Taiwanese utility models, when used effectively, can help establish your global intellectual property portfolio in a growing technology market. Allowance can be obtained quickly and cheaply. A larger portfolio can be obtained for the same cost compared to invention patents. Examination can be delayed until you are ready to assert a utility model against another party. Thus, examination costs can be delayed until an infringer appears or a market develops. However, there are some drawbacks to consider. If you are willing to accept these potential drawbacks, Taiwanese utility models can help accelerate your efforts to expand intellectual property protection into a region that is a high-tech player on the global technology scene.

Nathaniel Lucek is a senior associate in the Intellectual Property & Technology Law Practice at Hodgson Russ LLP. You can reach him at nlucek@hodgsonruss.com.

]]>https://www.cleanandgreenlaw.com/2015/06/09/utility-models-intellectual-property-taiwan/feed/0New Email Alert System Allows for Patent Publication Monitoringhttps://www.cleanandgreenlaw.com/2015/05/06/email-alert-system-patent-uspto/
https://www.cleanandgreenlaw.com/2015/05/06/email-alert-system-patent-uspto/#respondWed, 06 May 2015 19:14:25 +0000http://www.cleanandgreenlaw.com/?p=736Continue Reading]]>On April 24, 2014, the United States Patent & Trademark Office (USPTO) announced the release of the Patent Application Alert Service (the Service).

The Service provides free, customized email alerts when U.S. patent applications are published. Additionally, the Service offers direct access to the published applications for convenient review.

How the Service Works

An account must be created in order to use the Service. Like most websites, creating an account requires an email address and a password. The Service only sends alert emails to the provided email address.

The Service scans newly published U.S. patent applications for text matching alerts associated with your account. Alerts can be set based on text in the title, abstract, specification, and claims in each published application. Alerts can also be set based on applicant name, inventor name, and assignee. Additionally, alerts can be set based on the published application’s class (e.g., F16P 1/06 for safety devices designed for welding).

The USPTO publishes applications every Thursday. Therefore, the Service will perform searches and send alert emails once a week, often within minutes of the applications being made public.

The alerts set for each account are private. They can only be accessed by logging into the Service.

Pre-Issuance Submissions

The USPTO allows, under certain circumstances, third parties to submit patents, publications, and other written documents that are relevant to a pending application. The USPTO hopes that the Service will prompt additional pre-issuance submissions and therefore enhance the quality of examination and issued patents.

The timing requirements for pre-issuance submissions can be summarized as follows:

a submission must be made before the earlier of:

a notice of allowance; or

the later of:

6 months after the publication date; or

date of the first rejection of any claim by the examiner during examination.

Submissions must include a concise description of the asserted relevance of each submitted document. The concise description of relevance does not permit a third party to participate in prosecution.

Therefore, while a concise description may include claim charts (i.e., mapping various portions of a submitted document to different claim elements), one cannot propose rejections or submit arguments relating to an office action or an applicant’s reply to an office action.

The USPTO requires a $180 fee for every ten items submitted. However, no fee is required for three or fewer items when accompanied by a statement that the submission is the first and only submission filed by that party. There is also no requirement to identify “a real party in interest.” That means a submission can be anonymous.

An English language translation must be provided for all relevant portions of any listed non-English language document to be considered by the examiner.

Monitoring Competitors, Keywords, Classes, and Inventors

We expect the Service will be used for much more than pre-issuance submissions.

We expect companies will use the Service to monitor competitors’ applications as well as applications from key inventors in strategic market segments. We also expect that companies will use the Service to monitor specific technologies.